UNITED KINGDOM: Flower Power Use of INTERFLORA as Ad Keyword Constitutes Trademark Infringement

The High Court of Justice has ruled that Marks & Spencer Plc (M&S) infringed the INTERFLORA trademark by purchasing the Interflora keyword in Google AdWords. Interflora, Inc. & Interflora British Unit v. Marks & Spencer Plc & Flowers Direct Online Ltd, [2013] EWHC 1291 (Ch) (May 21, 2013).

In 2008, Google changed its keyword policy for Ireland and the United Kingdom to allow third parties to bid on keywords registered as trademarks. M&S purchased the keyword “Interflora,” so that when the word was entered into the GOOGLE search engine, customers were directed to a flower delivery service run by M&S. Interflora brought an action against M&S for infringement. It claimed that M&S not only drove traffic away from Interflora’s websites but also drove up the price of Interflora’s cost per click for its own AdWords campaigns.

In 2011, the case was referred to the Court of Justice of the European Union (CJEU). The CJEU held that if a trademark, even if it does not appear in an advertisement, is used as a keyword to drive a user to a paid ad, that use is in the course of trade in relation to the goods and services covered and can be stopped by the trademark owner, provided such use is likely to have an adverse effect on one of the functions of the trademark. It redirected the case back to the High Court of Justice for a decision.

Taking into account the CJEU’s judgment, the Court held that M&S’s advertisements had infringed the INTERFLORA trademark on the ground that they adversely affected the origin function of the mark, as the advertisement did not enable an Internet user to determine whether it originated from Interflora or a related entity or from a third party. Consumers had clicked on the M&S advertisement believing M&S’s flower delivery service to be related to Interflora.

Interestingly, the Court did not find any evidence that the M&S keyword advertising had an adverse effect on the reputation of the INTERFLORA trademark; therefore, there was no effect on the investment function of the mark. The Court also concluded that the M&S advertisement had not diluted Interflora’s mark.

This ruling tightens the reins on third parties that wish to use a competitor’s trademark as a means of driving traffic to their own website. Companies will need to think twice before bidding on a keyword for a competitor’s registered trademark.

(Source: www.inta.org)